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Treatment of GUI Patent Claims in Canada

February 07, 2017

Canadian patent examiners sometimes object to graphical user interface claims on the basis that they are unpatentable since they have “purely intellectual or aesthetic significance.” There is an old line of decisions that hold that something having solely intellectual or aesthetic significance is not patentable. For example, printed matter having only intellectual or aesthetic significance is not patentable. That is, where the invention lies in the information that is being displayed or in a manner of displaying it in an appealing manner, then the invention is not patentable. The Canadian patent appeal board (PAB) has confirmed that this line of reasoning should be extended to graphical user interfaces in a number of recent decisions (Decision nos. 1410 and 1411).

Interestingly, the old decisions that discuss the patentability of “printed matter” carve out some rather useful exceptions. Where the “printed matter” solves a problem associated with the substrate that it is displayed on, it may be patentable. For example, a textile that has markings to enable greater precision during manufacture was found to be a patentable form of invention, a newspaper layout having white space to facilitate reading when the paper is folded was found to be a practical form of invention, and a layout of text on a ticket which permits the ticket to be divided either horizontally or vertically while ensuring all information appears on both halves was found to be directed to a patentable form of invention. In view of these exceptions, it is sometimes possible to address “printed matter”-type objections to GUIs by arguing that the claimed subject matter does not have only intellectual/aesthetic significance.

It is interesting to keep these exceptions in mind when considering the recent PAB decisions regarding GUIs.

In decision 1410, the claims were directed to presenting event data. A display would include a central point representing the completion stage for an event and objects representing events. The radial distance of each object from the centre would represent the amount of time until the target completion date of the event. The stated purpose of the invention was to “increase the efficient presentation of information” in order to facilitate decision making.

In decision 1410, the PAB indicated that “printed-matter”-type objections do not just apply to traditional “ink-on-paper”, but also apply to any display of information where the sole contribution is in the information itself. The board found that the claimed solution has only intellectual meaning to the decision maker. Interestingly, the applicant sought to add claims to specify that the event object “comprises an electronic link to detailed information about the respective event”, but the board noted that this did not remedy the defect. However, the Board explicitly noted that the Applicant did not provide any submission as to how the inclusion of an electronic link would overcome the defect. Query whether an argument might have been made that the link claims provide a navigational interface and were, therefore, not of purely intellectual or aesthetic significance. That is, it seems that the applicant might have advanced an argument that the exceptions at least applied when the “link” feature was introduced.

A second GUI decision, no 1411, was rendered by the same board members who rendered the first GUI decision discussed above. The second decision was a bit more promising for GUI patentees than the first since some claims were found to be directed to patentable subject matter while others were not. Independent claim 1 was rejected while claim 9 was allowable. Claim 1 was a method claim and claim 9 was a system claim, but the difference in claim form (i.e., method vs. system) didn’t factor into the board’s reasoning. Claim 1 simply recited various graphic regions on a webpage. Claim 9 also recited graphic regions but additionally recited a “widget bar including one or more user reviews from one or more socially networked users being socially networked with the web page user…the widget bar being configured to accept category reviews from a web page user”. Claim 1 didn’t include this feature. This was found, by the Examiner, to be pertinent to allowability of the claim.

The board did not provide a detailed analysis regarding why the “widget bar” was sufficient for allowability. In fact, prior to the board’s decision, the Examiner had already agreed that claim 9 was patentable and so the patentability of claim 9 was not directly in dispute. The Examiner’s discussion of claim 9 was limited to the following: “Upon further consideration, the examiner considers the widget bar of claim 9 and its claimed functionality as performed by the computer system an essential element to solve the problem that is stated in the final action. It is a mechanism for presenting relevant information that is statutory. Claims 9-20 are therefore considered allowable.”

While it seems that the Examiner was correct in finding claims 9-20 allowable, it is difficult to understand the Examiner’s reasoning. It might be that the Examiner believed that the widget bar to have something other than “purely intellectual or aesthetic significance” since it was configured to accept category reviews from a web page user. That is, it would seem that one might argue that the distinction is the fact that the “widget bar” could be used for input, and the claims weren’t, therefore, directed to something having only intellectual or aesthetic significance; they provide a new input technique. Of course, this is somewhat difficult to reconcile with the claims in decision 1410 which specified a “link.” It may be that the board didn’t really consider the input nature of the “link” claims since the applicant didn’t argue this aspect.

While these decisions do not provide a lot of clarity, decision 1411 might prove useful in addressing “printed matter” objections as they pertain to GUIs. When the GUI is not only displaying information but also allows for input of commands, one might argue that the printed matter exception doesn’t apply. Of course, further clarification from CIPO would be welcome.